How will this impact 40k sites?

[Chris]

It seems GW is taking down the most popular blood bowl site.


>>>>>
Good evening everybody,

Today I received a letter from the Games Workshop Group PLC stating that if I didn't compy with 4 directives within 14 days they would take formal proceedings against me. It saddens me to see GW take such action against a perfectly legitamate fan site that has provided a global communications portal for BB fans, with no intention of conning them out of the millions they make in sales. I feel that I have been stereotypically branded as an Internet con-man. I have been a GW fan for 20+ years and this site has been active for almost 9 of that 20. This site has also had GW staff registered and actively contribute to its content (it may still have).

The assumptions from GWG PLC are that I am making a profit from the donations received by this site. They also point out that consumers may believe TalkBB is connected with GW and the fact the domain name includes Bloodbowl which is an infringement of GW's registered trademark. Now, I am not against their need to ensure their trademarks are not used inappropriately, I feel they could have approached me in a more friendly manner to investigte the purpose of the site and discover that I only wanted to provide a hub for dicussing Blood Bowl globally. instead, they immediately enter heavy handed.

If they truely believe the donations have contributed to me becoming a wealthy person or that I have made enough money to give up a proper job they are sadly mistaken. The small amount of money donated has gone to pay for the upkeep of the server (when I used my own hardware and hosted it at home) or towards the costs for hosting with an ISP. In short I have been vastly out of pocket to provide TalkBB rather than the other way around. I thank all those that have contributed as it has helped TalkBB survive.

I have been asked to:

Immediately cease and desist from any activity which infringes GW's intellectual property.
either remove remove your website or the reference to 'Blood Bowl' in your website name.
Remove the donations button from the page.
Confirm by return that you will not infringe GW's intellectual properly rights at any time in the future.

Now, I could simply remove Bloodbowl from the domain by renaming it to TalkBB.com, but that means buying a new domain and time spent sorting everything out. Bearing in mind I hardly visit TalkBloodBowl.com anyway, I can't really be bothered with all that so have decided to let it die. Therefore from Sunday 8 November 2009 www.talkbloodbowl.com will cease to exist.

Should anybody wish to take ownership of the source and contents I will be more than happy to prepare it for transfer, although this will not include the domain name. I will also have to ensure the recipient will not use DB content for anything other than to maintain the forum as part of an existing Blood Bowl site. This is to ensure passwords and emails do not fall into the wrong hands.

Thank you for your support over the years and for making TalkBloodBowl.com what it is today. Without you all it would have died all by itself many years ago, regardless of donations.

Regards,
JohnnyP
>>>>>>>>

[Aldramelech]

Id write back and say "Fine, I'll see you in court!"

I think they are bluffing and you shouldn't back down so easily. If everything is as you say it is then I cant see how they have a case.

[N0rdicNinja]

How can GW have such an awesome design team but be filled with ****-tards pretty much EVERYWHERE else in the company. I love Warhammer but I ****ing hate GW.

[eldargal]

Well, I'd get legal advice first.


Id write back and say "Fine, I'll see you in court!"

I think they are bluffing and you shouldn't back down so easily. If everything is as you say it is then I cant see how they have a case.

[Melissia]

Ask legal advice from someone who actually knows something about legal advice.

[Nabterayl]

It always saddens me when a cease-and-desist letter is the first contact between a company's lawyers and a third party. That said, it seems to me like they do have a halfway reasonable trademark claim given that Blood Bowl is in the URL. Would they win on the trademark issue? Maybe not. But it would take long enough to find out that it would be a lot less hassle to change the URL.

The donations issue is another matter. They might be trying to lay the groundwork for damages (very broadly speaking, if you receive any money from infringing somebody else's IP, they're entitled to get that money from you), because just off the top of my head it sounds like a stretch to me to say that people aren't allowed to donate money to you.

[Katie Drake]

Greet them with the middle finger salute.

GW took down the Vassal 40K team earlier this year and that's the last straw. Don't let them push you around.

[krispy]

3 questions id say:
1) what country are you in / your server located?
2) what country are GW's lawyers based?
and then
3) does their (the answer to a)'s country law have any power over (country b)?
if yes - do as they ask, if no then no worries as far as i can see.

/k

[Wolfshade]

I think the biggest problem is the donate button as it could be argued that you are deriving profit from their intellectual property. The analogy to this is copying a CD for a friend.

[Duke]

get a list of all the people who donated to you and send them a piece of sand... This way they paid for the sand, not for your site. lol

I all honesty, I would comply. They may not have a super solid case, but they can make your life hell for a long time... Remember that their lawyers are on salary whereas yours would be paid out of your pocket. And trust me Lawyers get expensive... your only hope would be to win and then force them to pay for your legal fees. But that may not happen and Judges generally lean towards protecting IP because it is such a grey area.

Duke

[Nabterayl]

I'm not a trademark lawyer (and I'm certainly not offering anybody any legal advice hereby), but I am a practicing lawyer at a high-powered U.S. firm, and IP is one of those things that friends come to their lawyer friends for advice about these days. So a couple of facts might be useful if people want to discuss this further:

Trademark Infringement
As I said earlier, the key thing to know about trademark is that it hinges on consumer confusion. The whole point of trademark law is that somebody can look at a phrase or picture and immediately identify it with a particular company or person. A different company or person is not allowed to ride on the coattails of that recognition. I'm skipping over some of the details, but for present purposes, if a reasonable consumer would be confused by your use of a phrase or picture, you lose the trademark case. This is the key concept.

It doesn't matter that you don't intend to infringe on somebody's trademark. It doesn't matter that you aren't actually using their trademark at all (e.g., Sôny isn't a trademark, but it still infringes on Sony, which is). It doesn't matter that you aren't actually getting money, let alone profit, from what you're doing. It doesn't even matter if no consumers actually are confused. As long as a reasonable consumer would be, you can't do it (although of course, if you can prove that no consumers are confused, that's powerful evidence that no reasonable consumer ever will be confused).

Fair Use and Free Speech
I'll mention fair use and free speech since everybody always asks. First, fair use. Fair use does not mean non-profit use. It does not mean giving credit where credit is due. It does not mean personal use. It does not mean being a devoted fan with the best of intentions who even, dammit, arguably helps the holder of the trademark. If you ever thought fair use meant any of those, get those ideas right out of your head, take them out back, and shoot them.

In a trademark context, fair use essentially means accuracy. For instance, even though "Blood Bowl" is a trademark, you are allowed to put up an advertisement with the words "Blood Bowl" if you are selling bowls that are literally made of blood. You're just accurately describing your product. Similarly, it's not trademark infringement to discuss Blood Bowl online, such as saying, "I played a game of Blood Bowl last night ..." Again, you're just accurately describing what you did. Note that, even though fair use allows us to use the words "Blood Bowl" in discussion, it doesn't necessarily let us use it as a label. The discussions that go on in a forum are different from the URL of the forum itself.

Second, free speech. Free speech does not let you violate people's trademarks. The First Amendment (for us Americans) does not let you violate people's trademarks. It lets you discuss other people's trademarks. That is all.

Fan Sites in General
This starts to edge us into the realm of copyright law, as well as trademark - particularly something called derivative works. If you create something and write it down, record it, sculpt it, or otherwise fix it in some medium, you have (except for a few very weird exceptions which are not relevant here) copyrighted it. Copyright allows you to say who can and cannot copy what you have made. It also allows you to say who can and cannot create works based on what you have made. These are called derivative works (because they are derivative of the thing you originally made). To repeat, the copyright holder gets to decide who can and cannot make derivative works.

This is a big pitfall for fan sites, and indeed fan fiction and fan art. Drawing a totally original picture of a space marine is almost certainly a derivative work - GW gets to say who does that. Writing down the history of your ork Waaagh! is almost certainly a derivative work - GW gets to say who does that, too. Of course, there are original elements to both of those that you get the copyright in. For instance, the expression, the pose, the lighting, and the background of your space marine drawing are all yours - just not the space marine part of the drawing. You're free to draw something else with the exact same expression, pose, lighting, background, etc. Just not a space marine.

If you violate somebody's copyright, they are well within their rights to sue you to make you stop. They are also well within their rights to get any money you made as a result of your violation of their copyright. They are well within their rights to do both. They are well within their rights to do neither, which only means that they are doing neither for now, and will still be well within their rights to change their mind later.

A lot of fan sites are like the space marine drawing. You can keep the original stuff, just not the GW stuff - and if that means what you have left is full of holes and about as useful as a screen door on a submarine, too bad.

But again, what about fair use, and free speech, and fan appreciation, and ... and stuff?!

Fair use in copyright is a little broader than in trademark. It still does not mean non-profit, giving proper credit, a disclaimer saying, "No intent to challenge anybody's IP," personal use, good intentions, having the word "fan" in the name of the genre, or any of that, so if you still need to shoot a couple of those ideas, do that now. What fair use does allow in a copyright context is copying for purposes of critique, and parody.

So if you're drawing a space marine that makes fun of a space marine, that's okay. If you think about it, it kind of has to be - if you can't create a work based on another work for the purpose of making fun of it, you've essentially outlawed parody.

Similarly for critique. Imagine a drama critic reviewing a play, and saying in his review that the dialogue sucks. He is absolutely allowed to quote a few lines of dialogue in his review to make his point, even though that dialogue is copyrighted and the copyright owner hasn't given him permission to copy any part of the script. We are arguably allowed to quote GW rulebooks on the same principle when we debate the meaning of rules, even though those rules are copyrighted and GW hasn't given us permission to copy them.

Fighting Back
If anybody reading this is thinking about fighting back against cease-and-desist letters or similar action of this sort, there's two things you should know.

The first thing you should know is that you should talk to a lawyer who is expert in this stuff and who has a monetary incentive to advise you well.

The second thing you should know is that lawsuits, and the legal maneuvering leading up to lawsuits, suck. Do not get anywhere near a lawsuit without being willing, up front, to go through hell even if you win. This is not because lawyers are inherently mean people. It's not even because they're paid to be mean to you (although sometimes they are). It's because, even with the nicest, best intentioned lawyers, lawsuits inherently suck. I'm not saying that people shouldn't fight back in some cases - just that you should go into it with your eyes open.

[Lerra]

Why would GW do this? What can they possibly gain by shutting down fan sites?

I know I have bought extra stuff from GW because of fansites - someone posted an awesome conversion, so I bought the parts to do a similar conversion myself. I'm sure a lot of people have picked up a WFB/40k army after reading about the game system on a fansite. I recently bought a set of Tau models after reading some recommendations at AdvancedTauTactica. Surely GW can't think that fansites are hurting the company.

It just seems silly for GW to protect their IP at the expense of their community and ultimately their profits.

[Aldramelech]

Haven't they got anything better to do for gods sake?

[Nabterayl]

Why would GW do this? What can they possibly gain by shutting down fan sites?

I know I have bought extra stuff from GW because of fansites - someone posted an awesome conversion, so I bought the parts to do a similar conversion myself. I'm sure a lot of people have picked up a WFB/40k army after reading about the game system on a fansite. I recently bought a set of Tau models after reading some recommendations at AdvancedTauTactica. Surely GW can't think that fansites are hurting the company.

It just seems silly for GW to protect their IP at the expense of their community and ultimately their profits.
I've always been curious about this myself, but I don't know any fellow attorneys who do this kind of work, so I've never had the opportunity to ask. The best I've been able to come up with on my own is some combination of the following:

They're concerned about trademark abandonment. Failure to defend your trademark when it is being infringed does not mean you lose your trademark. A consistent pattern of failure to defend your trademark when it is being infringed does raise the possibility that you could be held to have abandoned it. I don't know how much of a motivating factor this is, but I'm sure even the possibility of losing one of its trademarks (even for a relatively obscure specialist game like Blood Bowl) is something GW would like to avoid - and that goes double for GW's legal team.

One thing that's always bothered me about this, though - if GW (and other companies in similar positions) likes fan sites in general (which I think it's clear they do), but is worried about losing its trademark through failure to defend, why not just issue the fan site a very limited license? That way the fan site isn't infringing, and GW is no longer failing to defend their trademark (because there's nothing to defend against any more).

The risk to the company's bottom line really isn't that great. Every time somebody posts a story about this, the interwebs light up about how <insert company name here> is big, bad, and evil, doesn't care about its customer base, etc. People avow their disgust for the company, swear off its products unto the fourth generation, and so on. But how much of an impact does that actually have? This is something I would dearly love to ask in-house counsel at a place like GW.

My guess is that the actual economic impact of the negative press is negligible. If that's true - if the accumulated ill will of all these enforcement actions really doesn't add up to much of anything economically - then other concerns (such as #1, above) might be the driving influence behind decisions like this.

The legal department doesn't talk to the sales department. I don't know what GW's corporate culture is like, but I know that a lot of in-house legal departments aren't as plugged in to the sales side of things as you might think. Communication barriers within companies are very real. Compounding this effect can be the quality of the lawyers in the legal department - you'd be surprised at how many big companies have mediocre lawyers in-house (that's one of the things that keeps firms like mine in business; if every big company had top-flight legal talent working for it, we wouldn't have much to sell ourselves on!).

So imagine you have an i n-house lawyer who finds out that some guy on the internet is infringing his company's trademark. A really good lawyer would think about it from a business standpoint first - What's the threat to the company's bottom line? Can this situation be made to increase the company's bottom line? If not, is a legal response even warranted? If he didn't know the answers, a really good lawyer would go find the people who did.

A mediocre lawyer would see this as a strictly legal problem, and reach for the cheapest legal solution - a cease and desist letter - and then pat himself on the back for protecting his company's interests. Sales might not ever even know.
I don't know how much those three possibilities work together to produce this sort of response, or even if I'm on the right track, but my suspicion is it's some combination of the above.

[Aldramelech]

Can I just say Thanks from us all for taking the time to type out these lengthy posts. They are very enlightening to us non legal types.

[Jwolf]

These are simple fixes, and a site name containing exactly the name of a copyrighted product was certain to get a Cease and Desist once legal was aware of it. That said, cease and desist letters are just part of doing business on the internet. Usually some fairly minor changes are all that are required; for instance, in this case, a change to the title of the site (notice they did not require a domain name change, just a name change, changing the donation button to a newsletter subscription button, and a nice email back saying " I won't violate your IP". 30 minutes of work and over with.

[Duke]

...

The legal department doesn't talk to the sales department. I don't know what GW's corporate culture is like, but I know that a lot of in-house legal departments aren't as plugged in to the sales side of things as you might think. Communication barriers within companies are very real. Compounding this effect can be the quality of the lawyers in the legal department - you'd be surprised at how many big companies have mediocre lawyers in-house (that's one of the things that keeps firms like mine in business; if every big company had top-flight legal talent working for it, we wouldn't have much to sell ourselves on!).

So imagine you have an i n-house lawyer who finds out that some guy on the internet is infringing his company's trademark. A really good lawyer would think about it from a business standpoint first - What's the threat to the company's bottom line? Can this situation be made to increase the company's bottom line? If not, is a legal response even warranted? If he didn't know the answers, a really good lawyer would go find the people who did.

A mediocre lawyer would see this as a strictly legal problem, and reach for the cheapest legal solution - a cease and desist letter - and then pat himself on the back for protecting his company's interests. Sales might not ever even know.[/list]
I don't know how much those three possibilities work together to produce this sort of response, or even if I'm on the right track, but my suspicion is it's some combination of the above.



This is probably the biggest problem. I can tell you that generally speaking the in-house attornies do not think at all about sales. All they care about (generally) is protecting their company. If they never get sued because the paperwork is skin tight, but sales drop through the floor because the paperwork is too much then often times the legal department will often call that a 'success,'

Often times if the sales department is involved the argument is "By not getting sued we saved millions, which is equivilent to us increasing sales by XYZ percent." I know because often times I am the one who says those same words, lol.

Again, I would say that you should choose your battles wisely. I wouldn't fight this one, there isn't enough gain in it for you, and as my buddy Nab said it is a pain just to go through the process.

Duke

[Commissar Lewis]

Looks like GW is mirroring the Imperium and going the route of Obstructive Bureaucrat.

I mean, I like the IP and the models, but bull **** like this is what likely alienates a lot of fans. Honestly, if GW is gonna be acting like a bunch of ham-fisted goons, then mayhap I should purchase their products.

I can understand where their coming from and their point of view, but it still leaves a bad taste in my mouth to see them shooting down fan enthuisiasm.

[BuFFo]

Haven't they got anything better to do for gods sake?

No they don't. They are a bunch of idiots. Have been so since they went public in the 90's...

[_Si_]

A lot of people seem to have a very naive impression of GW. They're not a big evil faction, but legal will have been tasked with protecting the company's interests and that's what they're doing.

In terms of legal documentation think of the C&D as more of a "hello, we know you exist and we'd rather you didn't trade off our name, okey dokey?". Just get back in touch, work with them and play nice.

Whilst IP infringement is always a bit of a grey area and is usually down to the individual judge to make a hah judgement call, the only possible reason you'd ever let this situation get that far is if the site is an ongoing business interest.

It's just not worth the hassle when you're in the wrong. Play nice and keep the site going. You never know, GW might even buy you a new domain if you come at it from the right angle..

[BuFFo]

A lot of people seem to have a very naive impression of GW. They're not a big evil faction, but legal will have been tasked with protecting the company's interests and that's what they're doing.

No, they are not evil, but incredibly stupid.

Gw knows the difference between someone trying to make a buck off their property and a fansite.

It doesn't take a genius to understand that.

I bet you would feel pissed if you showed up to a ComicCon, with a few pictures of Wolverine you drew, hoping to get them signed, only to have Marvel Lawyers sue you on the spot and take your drawings away.

Please.... Its a fansite.

I guess every time you put green stuff on your models, and try to sell them on eBay, you need to be aware that GW will appear on your doorstep, take their model back, and leave you with the green stuff.

I am sure some nerd will explain to me the difference between a fansite an eBay. Whatever.

Its a Fansite supporting a hobby, and it only helps to keep players active in said hobby.

But I guess the Webmaster must be swimming in millions of dollars from donations lol.

[Nabterayl]

You know, before people get too bent out of shape about this, you might go back and read Jwolf's post. From the sound of it, GW isn't actually asking that the site be taken down.

[Aldramelech]

To be fair your used to all this, its business and you live in that world. To us non business types any kind of legal action seems extreme and heavy handed. Its a matter of perspective I suppose.

[Duke]

Generally speaking:

individuals are stupid, companies are stupider-ist (bad english intendid)

lol

Duke

[Nabterayl]

Well, ok, fair enough. Try looking at it this way. What have they actually asked for?


1. Immediately cease and desist from any activity which infringes GW's intellectual property.

This sounds like a catch-all to me. If you actually go to the site it looks pretty bare-bones to me. I doubt that the author of this letter has anything specific in mind by this - if he did, it would have been enumerated.


2. either remove remove your website or the reference to 'Blood Bowl' in your website name.

Okay. Change the name. No big deal.


3. Remove the donations button from the page.

Think about this one. What's the argument here? GW is not (unless its lawyers aren't even worthy of their degrees) saying that people cannot donate money. If I want to give Chris a million dollars out of the goodness of my heart, there is damn all GW can do about it (although the IRS will surely rub its hands with glee).

What GW is almost certainly thinking of here is that Chris cannot get money from infringing GW's trademark. That's true - as far as it goes. Where doesn't it go? Two areas:

What is the actual infringement here? So far all GW has identified is the name of the site. Take that away (and take away any infringing images, just to be safe), and the site isn't infringing anything anymore.
Jwolf already suggested a great way to be extra sure about this one - just make it a newsletter subscription, or heck, even a newsletter donation. As long as the newsletter itself doesn't infringe (e.g., you don't call the newsletter "The BLOOD BOWL Times" and plaster it with Blood Bowl images), then Chris is just getting money for his newsletter. Nothing wrong with that.


4. Confirm by return that you will not infringe GW's intellectual properly rights at any time in the future.

Okay, this one is a bit heavy-handed, though it's not a surprise. It's also of dubious legal effect. Remember what this is - you're promising to follow the law. Let's say that you promise to GW you will never, ever infringe its intellectual property. Then, being a two-faced double-dealing *******, you turn around and <gasp> infringe.

What are they going to do? Sue you for infringing their IP, of course. Which they would have done anyway, because, you know, you broke the law. There is no penalty for breaking a promise to follow the law ... except of course for the penalty prescribed for breaking the actual law you broke. So I don't see that this one has any teeth.

So what does that leave us with? Reply letter saying that you don't think you infringed GW's intellectual property, never intended to infringe GW's intellectual property, and don't think you are, at this time, infringing GW's intellectual property - but are happy to accommodate their reasonable requests in the interests of avoiding a dispute. Change the site name, take down any Blood Bowl images, call the donation button something else. Done and dusted.

[Lerra]

The average person has a limited understanding of the law, and a lawyer affiliated with a large company is scary. We've all heard stories of people getting sued for seemingly minor infractions for $1.9 million or whatever (as was the case with a local woman vs. the RIAA). If you don't know the legal intricacies and can't afford to hire a lawyer to consult, it's not worth the risk just to run a small hobby website in your free time. The imagination can do a lot with the phrase "legal nightmare."